Liqwd Inc. v L'Oréal (UK) Ltd
| Jurisdiction | England & Wales |
| Judge | Mr Justice Birss |
| Judgment Date | 11 June 2018 |
| Neutral Citation | [2018] EWHC 1394 (Pat) |
| Court | Chancery Division (Patents Court) |
| Docket Number | Case No: HP-2016-000056 |
| Date | 11 June 2018 |
[2018] EWHC 1394 (Pat)
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
PATENTS COURT
Royal Courts of Justice
The Rolls Building
7 Rolls Buildings
Fetter Lane
London EC4A 1NL
THE HON. Mr Justice Birss
Case No: HP-2016-000056
Iain Purvis QC and Katherine Moggridge (instructed by Hogan Lovells) for the Claimants
Justin Turner QC and Mark Chacksfield (instructed by Baker McKenzie) for the Defendants
Hearing dates: 24th, 25th, 26th, 27th April, 1st, 2nd May 2018
| Topic | Paragraphs |
| Introduction | 1 |
| The witnesses | 13 |
| The skilled team and the common general knowledge | 27 |
| The patent and claim construction | 56 |
| Amendments | 107 |
| Infringement | 111 |
| Priority | 118 |
| The prior art | 119 |
| The prior use | 120 |
| Catzy | 157 |
| WO 768 | 187 |
| Kim | 228 |
| The second claimant's status | 254 |
| Conclusion | 264 |
Introduction
This is a patent case about hair care products. The patent is UK patent GB 2 525 793 entitled “Keratin treatment formulations and methods”. The patent was granted on 2 nd November 2016 following an application made on 15 th May 2015 claiming priority from US filing 61/994,709 dated 16 th May 2014. The patent belongs to the first claimant. The second claimant is the exclusive licensee. The claimants can be referred to together as Olaplex.
Olaplex makes and sells hair products including a product called Olaplex No. 1 Bond Multiplier. The key ingredient in Bond Multiplier is a diamine salt of maleic acid. Sales of Bond Multiplier have grown dramatically since the product was launched in June 2014. It sold $100 million worth of sales in its first year. Olaplex Bond Multiplier has had extensive coverage in the press and has been used by many female celebrities. The defendants (L'Oréal) sell a product called Smartbond Step 1. It contains maleic acid too, albeit not in the same form as in Bond Multiplier. Olaplex says that L'Oréal first attempted to buy the Olaplex business but has now chosen to adopt the patented ingredient. Whether that is so has no bearing on the issues I have to decide.
Olaplex contends that L'Oréal's Smartbond infringes the patent. L'Oréal denies infringement and contends the patent is invalid. L'Oréal also seeks a declaration of non-infringement relating to an alternative formulation of Smartbond. In response to the validity attack Olaplex has applied to amend the patent in various ways.
Claims 1 and 11 of the patent as granted are in this form:
Claim 1
A method for providing bleached hair comprising:
(a) applying to the hair a first formulation comprising a bleaching agent; and
(b) applying to the hair a second formulation comprising an active agent, wherein the active agent is
or a simple salt thereof;
and wherein step (a) occurs simultaneously with step (b).
Claim 11
The use of an active agent which is
or a simple salt thereof
simultaneously with a bleaching agent
to reduce or prevent hair damage due to a treatment to provide bleached hair.
The chemical formula shown in these claims is maleic acid. There are issues of claim construction. The main two are the scope of the term “providing bleached hair” and a point about the chemical formula along with the reference to simple salt. The bleached hair point is whether the term refers only to the process of hair lightening which changes the colour of hair by oxidation but does not involve hair dye or whether it also includes a process of hair dyeing using oxidation dyes, which does involve some use of bleaching agents but also involves dye. The real importance of this issue is about prior art. L'Oréal relies on a prior Korean patent application known as Kim (publication number PAT 2003-0003970). Kim discloses using maleic acid and derivatives of it in a process using oxidation dyes. If the Olaplex claims cover using oxidation dyes then they have a problem of lack of novelty (although there may be dependent claims which are novel). If the claims are limited to bleaching without dyeing then the issue is one of obviousness.
The issue about the formula and simple salt engages issues of construction, priority, amendment and infringement. In its form as granted the claim refers to maleic acid (by the formula) or a simple salt thereof. L'Oréal contends that claims are not entitled to priority because “simple” salt is not in the priority document. If the claims lose priority then they are all invalid because Olaplex's Bond Multiplier product was made available to the public between the priority date and the filing date of the patent in suit. Olaplex does not accept the granted claims are not entitled to priority but offers an unconditional amendment to remove the reference to a simple salt. Accordingly in its opening skeleton Olaplex did not get into the detail of what simple salt meant. Olaplex contended that the unconditionally amended claims, with the reference to simple salt struck through, relate to any relevant chemical system containing the species which maleic acid produces in solution. It is not limited to the undissociated form of maleic acid depicted in the formula essentially because the skilled person would be well aware that when maleic acid was put into aqueous solution, it would dissociate into ions such as maleate ion and hydrogen maleate. The equilibrium would be determined by the pH.
Now Olaplex's submission about the scope of the claim may be right or wrong but starting at the amended claim risks leading to trouble. That is because one of the objections raised by L'Oréal to the amendment is a question of extension of scope. If one starts by focussing on the granted claim, the reference to the maleic acid formula or a simple salt thereof could be understood by the skilled person as an attempt by the patentee specifically to limit the claim only to maleic acid itself or only simple salts and not, for example, forms of maleic acid derivatives which are neither maleic acid nor simple salts or to maleate ions however formed. And if that is right then the construction of the amended claim advanced by Olaplex could be seen as making it wider in scope than the granted claim. But that is forbidden by s76 of the Patents Act, implementing Art 123(3) of the European Patent Convention. Tangled up with all this are questions raised by an alternative formulation of the L'Oréal Smartbond product the subject of a claim for a declaration of non-infringement. Whereas the Smartbond formulation alleged to infringe includes maleic acid and ethanolamine as distinct species, in the alternative formulation the species is a salt – ethanolamine maleate. The debate is also illustrated by a question of whether Olaplex's own Bond Multiplier formula is within the claim. The diamine salt in the formulation may not be a simple salt. A further dimension to this general issue is about amendments to the specification. Usually when claims are amended, there may need to be corresponding amendments to the specification. They are normally not controversial but they can be when an issue of construction like this arises.
The way to resolve these issues will be to start in the right place (the granted patent including the claims as granted) and work from there.
Aside from these issues there are three more validity attacks. L'Oréal relies on the description of a hair lightening product called Catzy. This was published before the priority date. It included maleic acid as an excipient. Known uses of maleic acid as an excipient were as a buffering or chelating agent. The amount of maleic acid in the Catzy formulation is not stated in the published material (although it is now known). There is a question of claim construction whether the claims would cover such a formulation in any event. Olaplex also relies as a fall back on dependent claims which involve ranges specifying the amount of maleic acid in the formulation.
L'Oréal relies on a s2(3) citation WO 2015/017768 A1. This is a published international patent application under the PCT made by Liqwd Inc. I will refer to it as WO 768. It was published on 5 th February 2015 and designates the United Kingdom. The WO 768 application was filed on 1 st August 2014 claiming priority from a series of US filings, most of which were before the claimed priority date of the patent in suit. Therefore although WO 768 itself was filed after the claimed priority date of the patent in suit, matter disclosed within it may be entitled to a priority earlier than the patent in suit. L'Oréal refers to example 8 of the published application. If the matter disclosed by that example is entitled to a priority date before 16 th May 2014 then it is prior art against all claims. As a s2(3) citation WO 768 is only relevant for novelty, not inventive step.
The other major issue in the case is prior use. It is not in dispute that before the 15 th May 2014 priority date, Olaplex distributed its Bond Multiplier product to some hair care professionals in California and elsewhere in the USA. Most of the hair care professionals are referred to as colorists. It is convenient to use that term and to use the US spelling since that is how they refer to one another.
If the distribution to the colorists made the contents of the product available to the public then the patent is invalid. L'Oréal contends that it did and refers to extensive social media posts by the hair professionals promoting the product, promoting its use on celebrities, and saying how wonderful it was. Initially Olaplex took two points. The first was and is that this distribution exercise was part of testing the product and that the recipients were not told what the secret formula was and were not free to analyse it or to give...
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